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  • Federal Circuit Affirms PTAB Finding That Article Is Not A “Printed Publication”
     
    11/13/2018
    On November 6, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final written decision by the Patent Trial and Appeal Board (PTAB) finding the patent claims that had been challenged by inter partes review (IPR) to be not unpatentable.   Acceleration Bay, LLC v. Activision Blizzard Inc., —F.3d—, (Fed. Cir. November 6, 2018).  The CAFC ruled that the patent challenger had not proved that an article available on the Internet before the critical date was a “printed publication,” and that the article therefore was not available as prior art.

    An IPR is an administrative procedure by which one can challenge the validity of an issued patent.  The patent challenger files a petition in the Patent Office, the patent owner may respond, and the Patent Trial and Appeal Board (PTAB) decides whether to institute an IPR.  If an IPR is instituted, the PTAB ultimately issues a written decision finding the challenged claims either unpatentable or not.

    In this case, the patent challenger had relied in part on what was referred to as “the Lin article,” a technical report available on the website of the Computer Science and Engineering department (CSE) at the University of California, San Diego, since 1999.  The question before the PTAB and the CAFC was whether the availability of the Lin article on the CSE website showed that the article was sufficiently accessible to the interested public such that it qualified as a prior-art “printed publication” per 35 U.S.C. § 102(a).  The CAFC noted, “[a] reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” 

    The patent challenger showed that the technical reports on the CSE website were indexed, but the PTAB concluded that “the website allowed a user to view a list of technical reports indexed only by author or year and that there was no evidence as to how many reports were in the Library’s database in 1999.”  The website also included a keyword-search feature, but that feature “was not reliable.”  The decision did not discuss whether the Lin article had been indexed by Google or another Internet search engine.

    The CAFC observed that “[t]he test for public accessibility is not ‘has the reference been indexed?’  [W]here indexing is concerned, whether online or in tangible media, the ‘ultimate question is whether the reference was ‘available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’”  The Court concluded that, in the case of the Lin article, the index and search capabilities of the CSE website were insufficient to meet that test.

    The result was that, although the Lin article had been literally available to the public via the Internet since 1999, it was not prior art, and the challenged patent survives.  The case presents interesting questions about the public-accessibility test, including, for example, questions about the sufficiency of ordinary library indexing practices.

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